Trademark Definition | Investopedia Trademark What is a 'Trademark' A trademark is a recognizable insignia, phrase or other symbol that denotes a specific product or service and legally differentiates it from all other products. BREAKING DOWN 'Trademark' A trademark serves to exclusively identify a product or service with a specific company, and is a recognition of that company's ownership of the brand . Trademarked products are generally considered a form of property. Most countries have agencies through which businesses can have their products trademarked. In the United States, this function is served by the United States Patent and Trademark Office . A trademark can be a logo, like the Nike Swoosh, a slogan, or simply the name of a product. Some brands, like Kleenex, are so prominent that they have almost replaced the original word (tissue) in everyday language. One of the main purposes of having a product trademarked is to protect the product from being used without permission of the source company. Most countries have patent laws which are designed to protect against copyright infringement . International copyright regulation is much more complicated, as there exists no universally recognized patent office.

To register a patent in the United States, a business must submit a patent application to the Patent Office, which will be reviewed by an attorney to determine that the patent has been registered in accordance with federal regulations and that it is a distinct product and does not infringe on the trademark rights of an existing patent. After the application has been reviewed, the patent is "published for opposition" for 30 days, during which time other companies can oppose the registration of the new patent. Trademarks can be bought and sold. Famously, Nike purchased the instantly recognizable Swoosh logo for only $35. Trademarks can also be licensed to other companies for an agreed-upon period of time or under certain conditions, which can result in crossover brands. Lego, a distinct company, has licensed many famous brands like Star Wars and DC Comics to produce Lego versions of popular products. These are also examples of the importance of branding products from a marketing perspective. Trademarks help distinguish products not only within the legal system, but to the consumer. History of the Trademark Trademark, as the word implies, is a mark that shows the trade of the maker.

In 1266, King Henry III of England passed a law requiring all bakers to make a distinctive mark for all the bread they sold. The Löwenbraü brewery in Munich, Germany claims it has used a lion (Löwenbraü means "lion's brew") as its trademark since 1383. The first modern trademark law was promulgated in France in 1857, and Britain first issued its trademark law, the Merchandise Marks Act, in 1862. The British act made it a criminal offense to try and sell a product under the auspices of another manufacturer. In the U.S., Congress tried to pass a trademark law in 1870, but it was struck down by the Supreme Court that year. Congress tried again in 1881, which was revised into the Trademark Act in 1905. Overview of Trademark Law Overview of Trademark Law 1. What is a trademark? A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another. 15 U.S.C. � 1127 .

For example, the trademark " Nike ," along with the Nike "swoosh," identify the shoes made by Nike and distinguish them from shoes made by other companies (e.g. Reebok or Adidas ). Similarly, the trademark " Coca-Cola " distinguishes the brown-colored soda water of one particular manufacturer from the brown-colored soda of another (e.g. Pepsi ). When such marks are used to identify services (e.g. " Jiffy Lube ") rather than products, they are called service marks, although they are generally treated just the same as trademarks. Under some circumstances, trademark protection can extend beyond words, symbols, and phrases to include other aspects of a product, such as its color or its packaging. For example, the pink color of Owens-Corning fiberglass insulation or the unique shape of a Coca-Cola bottle might serve as identifying features. Such features fall generally under the term "trade dress," and may be protected if consumers associate that feature with a particular manufacturer rather than the product in general. However, such features will not be protected if they confer any sort of functional or competitive advantage. So, for example, a manufacturer cannot lock up the use of a particular unique bottle shape if that shape confers some sort of functional advantage (e.g.

is easier to stack or easier to grip). Qualitex Co. v. Jacobson Products Co., Inc., 115 S. Ct. 1300 (1995) . Trademarks make it easier for consumers to quickly identify the source of a given good. Instead of reading the fine print on a can of cola, consumers can look for the Coca-Cola trademark. Instead of asking a store clerk who made a certain athletic shoe, consumers can look for particular identifying symbols, such as a swoosh or a unique pattern of stripes. By making goods easier to identify, trademarks also give manufacturers an incentive to invest in the quality of their goods. After all, if a consumer tries a can of Coca-Cola and finds the quality lacking, it will be easy for the consumer to avoid Coca-Cola in the future and instead buy another brand. Trademark law furthers these goals by regulating the proper use of trademarks. 2. What sources of law govern trademarks? Trademarks are governed by both state and federal law. Originally, state common law provided the main source of protection for trademarks. However, in the late 1800s, the U.S. Congress enacted the first federal trademark law.

Since then, federal trademark law has consistently expanded, taking over much of the ground initially covered by state common law. The main federal statute is the Lanham Act, which was enacted in 1946 and most recently amended in 1996. 15 U.S.C. �� 1051, et seq. . Today, federal law provides the main, and by and large the most extensive, source of trademark protection, although state common law actions are still available. Most of the discussion in this summary focuses on federal law. 3. What prerequisites must a mark satisfy in order to serve as a trademark? In order to serve as a trademark, a mark must be distinctive -- that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within.

An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. For example, the words " Exxon ," " Kodak ," and " Apple " bear no inherent relationship to their underlying products (respectively, gasoline, cameras, or computers). Similarly, the Nike "swoosh" bears no inherent relationship to athletic shoes. Arbitrary or fanciful marks are inherently distinctive -- i.e. capable of identifying an underlying product -- and are given a high degree of protection. A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good. For example, the word " Coppertone " is suggestive of sun-tan lotion, but does not specifically describe the underlying product. Some exercise of imagination is needed to associate the word with the underlying product. At the same time, however, the word is not totally unrelated to the underlying product. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive and are given a high degree of protection. A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients).

For example, " Holiday Inn ," " All Bran ," and "Vision Center" all describe some aspect of the underlying product or service (respectively, hotel rooms, breakfast cereal, optical services). They tell us something about the product. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired "secondary meaning." Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage. 4. How do you acquire rights in a trademark? Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with the U.S. Patent and Trademark Office ("PTO"). 15 U.S.C. � 1127(a) . Remember, however, that descriptive marks qualify for protection (and can be registered) only after they have acquired secondary meaning .

Thus, for descriptive marks, there may be a period after the initial use of the mark in commerce and before it acquires secondary meaning, during which it is not entitled to trademark protection. Once it has achieved secondary meaning, trademark protection kicks in. The use of a mark generally means the actual sale of a product to the public with the mark attached. Thus, if I am the first to sell "Lucky" brand bubble-gum to the public, I have acquired priority to use that mark in connection with the sale of bubble-gum (assuming that the mark otherwise qualifies for trademark protection). This priority is limited, however, to the geographic area in which I sell the bubble gum, along with any areas I would be expected to expand into or any areas where the reputation of the mark has been established. So, for example, if I sell pizza in Boston under the name "Broadway Pizza," I will probably be able to prevent late-comers from opening up a "Broadway Pizza" within my geographic market. But I will not be able to prevent someone else from opening a "Broadway Pizza" in Los Angeles. The other way to acquire priority is to register the mark with the PTO with a bona fide intention to use the mark in commerce.

Unlike use of a mark in commerce, registration of a mark with the PTO gives a party the right to use the mark nationwide, even if actual sales are limited to only a limited area. This right is limited, however, to the extent that the mark is already being used by others within a specific geographic area. If that is the case, then the prior user of the mark retains the right to use that mark within that geographic area; the party registering the mark gets the right to use it everywhere else. So, for example, if I register the mark "Broadway" in connection with the sale of pizza, the existing "Broadway Pizza" in Boston retains the right to use the name in Boston, but I get the right to use it everywhere else. 5. What does it mean to register a trademark? Although registration with the PTO is not required for a trademark to be protected, registration does confer a number of benefits to the registering party. 15 U.S.C. � 1051 . As described above, registration gives a party the right to use the mark nationwide, subject to the limitations noted above. 15 U.S.C. � 1072 .

Registration constitutes nationwide constructive notice to others that the trademark is owned by the party. Registration enables a party to bring an infringement suit in federal court. 15 U.S.C. � 1121 . Registration allows a party to potentially recover treble damages, attorneys fees, and other remedies. Finally, registered trademarks can, after five years, become "incontestable," at which point the exclusive right to use the mark is conclusively established. 15 U.S.C. � 1065. Applications for registration are subject to approval by the PTO. The PTO may reject a registration on any number of grounds. 15 U.S.C. � 1052 . For example, the PTO will refuse to register generic marks or descriptive marks that have not attained secondary meaning. The PTO can also reject "immoral or scandalous" marks, certain geographic marks, marks that are primarily surnames, and marks that are likely to cause confusion with existing marks. As noted above, rejection of the mark does not necessarily mean that it is not entitled to trademark protection; it means only that the mark is not entitled to the additional benefits listed above. 15 U.S.C. � 1125.

Some states also have their own registration systems under state trademark law. 6. Can trademark rights be lost? The rights to a trademark can be lost through abandonment, improper licensing or assignment, or genericity. A trademark is abandoned when its use is discontinued with an intent not to resume its use. Such intent can be inferred from the circumstances. Moreover, non-use for three consecutive years is prima facie evidence of abandonment. The basic idea is that trademark law only protects marks that are being used, and parties are not entitled to warehouse potentially useful marks. So, for example, a recent case held that the Los Angeles Dodgers had abandoned rights to the Brooklyn Dodgers trademark Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993) . Trademark rights can also be lost through improper licensing or assignment. Where the use of a trademark is licensed (for example, to a franchisee) without adequate quality control or supervision by the trademark owner, that trademark will be canceled. Similarly, where the rights to a trademark are assigned to another party in gross, without the corresponding sale of any assets, the trademark will be canceled.

The rationale for these rules is that, under these situations, the trademark no longer serves its purpose of identifying the goods of a particular provider. Dawn Donut Co., Inc. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) . Trademark rights can also be lost through genericity. Sometimes, trademarks that are originally distinctive can become generic over time, thereby losing its trademark protection Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938) . A word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer. So, for example, the term "thermos" has become a generic term and is no longer entitled to trademark protection. Although it once denoted a specific manufacturer, the term now stands for the general type of product. Similarly, both "aspirin" and "cellophane" have been held to be generic. Bayer Co. v. United Drug Co., 272 F.505 (S.D.N.Y.

1921) . In deciding whether a term is generic, courts will often look to dictionary definitions, the use of the term in newspapers and magazines, and any evidence of attempts by the trademark owner to police its mark. 7. What constitutes trademark infringement? If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement. 15 U.S.C. �� 1114, 1125 . The standard is "likelihood of confusion." To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent. Polaroid Corp. v. Polarad Elect.

Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961) . So, for example, the use of an identical mark on the same product would clearly constitute infringement. If I manufacture and sell computers using the mark "Apple," my use of that mark will likely cause confusion among consumers, since they may be misled into thinking that the computers are made by Apple Computer, Inc. Using a very similar mark on the same product may also give rise to a claim of infringement, if the marks are close enough in sound, appearance, or meaning so as to cause confusion. So, for example, "Applet" computers may be off-limits; perhaps also "Apricot." On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim. Thus, Apple Computer and Apple Records can peacefully co-exist, since consumers are not likely to think that the computers are being made by the record company, or vice versa. Between the two ends of the spectrum lie many close cases, in which the courts will apply the factors listed above.

So, for example, where the marks are similar and the products are also similar, it will be difficult to determine whether consumer confusion is likely. In one case, the owners of the mark "Slickcraft" used the mark in connection with the sale of boats used for general family recreation. They brought an infringement action against a company that used the mark "Sleekcraft" in connection with the sale of high-speed performance boats. Because the two types of boats served substantially different markets, the court concluded that the products were related but not identical. However, after examining many of the factors listed above, the court concluded that the use of Sleekcraft was likely to cause confusion among consumers. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) . 8. What constitutes trademark dilution? In addition to bringing an action for infringement, owners of trademarks can also bring an action for trademark dilution under either federal or state law.

Under federal law, a dilution claim can be brought only if the mark is "famous." In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered. 15 U.S.C. � 1125(c) . Kodak, Exxon, and Xerox are all examples of famous marks. Under state law, a mark need not be famous in order to give rise to a dilution claim. Instead, dilution is available if: (1) the mark has "selling power" or, in other words, a distinctive quality; and (2) the two marks are substantially similar. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989) .

Once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action against any use of that mark that dilutes the distinctive quality of that mark, either through "blurring" or "tarnishment" of that mark; unlike an infringement claim, likelihood of confusion is not necessary. Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. So, for example, in a recent case, ToysRUs successfully brought a tarnishment claim against adultsrus.com, a pornographic web-site. Toys "R" Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996) . 9. What other potential causes of action are there?

Although likelihood of confusion and dilution are the two main trademark-related causes of action, there exist a number of additional state-law causes of action under state unfair competition law: passing off, contributory passing off, reverse passing off, and misappropriation. Passing off occurs when the defendant tries to pass off its product as the plaintiff's product. So, for example, manufacturing computers and claiming that they are made by Apple Computer, Inc. Contributory passing off occurs when the defendant assists or induces another (typically a retailer) to pass of its product as the plaintiff's product. So, for example, inducing a computer store to represent that the computers are made by Apple, when in fact they are not. Reverse passing off occurs when the defendant tries to pass off the plaintiff's product as its own. So, for example, taking a computer made by Apple, removing the label, and putting on a different label. Finally, misappropriation is a highly unstable, but potentially fruitful source of additional trademark-related claims. 10. What defenses are there to trademark infringement or dilution? Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody.

Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary , meaning, and no consumer confusion is likely to result. So, for example, a cereal manufacturer may be able to describe its cereal as consisting of "all bran," without infringing upon Kelloggs' rights in the mark "All Bran." Such a use is purely descriptive, and does not invoke the secondary meaning of the mark. Similarly, in one case, a court held that the defendant's use of "fish fry" to describe a batter coating for fish was fair use and did not infringe upon the plaintiff's mark "Fish-Fri." Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983) . Such uses are privileged because they use the terms only in their purely descriptive sense. Some courts have recognized a somewhat different, but closely-related, fair-use defense, called nominative use. Nominative use occurs when use of a term is necessary for purposes of identifying another producer's product, not the user's own product.

For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block . The New Kids on the Block sued USA Today for trademark infringement. The court held that the use of the trademark "New Kids on the Block" was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party's products and services. When the above conditions are met, such a use will be privileged. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) . Finally, certain parodies of trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that artistic and editorial parodies of trademarks serve a valuable critical function, and that this critical function is entitled to some degree of First Amendment protection.

The courts have adopted different ways of incorporating such First Amendment interests into the analysis. For example, some courts have applied the general "likelihood of confusion" analysis, using the First Amendment as a factor in the analysis. Other courts have expressly balanced First Amendment considerations against the degree of likely confusion. Still other courts have held that the First Amendment effectively trumps trademark law, under certain circumstances. In general, however, the courts appear to be more sympathetic to the extent that parodies are less commercial, and less sympathetic to the extent that parodies involve commercial use of the mark. 11. What remedies are there for trademark infringement and/or dilution? Successful plaintiffs are entitled to a wide range of remedies under federal law. Such plaintiffs are routinely awarded injunctions against further infringing or diluting use of the trademark. 15 U.S.C. � 1116(a) . In trademark infringement suits, monetary relief may also be available, including: (1) defendant's profits, (2) damages sustained by the plaintiff, and (3) the costs of the action. 15 U.S.C. � 1117(a) . Damages may be trebled upon showing of bad faith.

In trademark dilution suits, however, damages are available only if the defendant willfully traded on the plaintiff's goodwill in using the mark. Otherwise, plaintiffs in a dilution action are limited to injunctive relief. 15 U.S.C. � 1125(c). Should You Trademark Your Name? | LegalZoom Article Center &rtrif; Intellectual Property &rtrif; Trademarks &rtrif;Should You Trademark Your Name? Should You Trademark Your Name? by Stephanie Morrow , June 2009 In 2005, actor Morgan Freeman won the rights to use the domain name morganfreeman.com, which was being illegally used by the company Mighty LLC. Freeman applied for a trademark from the US Patent and Trademark Office when he found out that Mighty LLC was using his domain name "in bad faith to divert Internet traffic to a commercial search engine." Ultimately, the arbitrators for the World Intellectual Property Organization (WIPO), the intellectual property arm of the United Nations, agreed with Freeman and determined that Freeman's illustrious career made his name sufficiently recognizable in the entertainment and movie spheres.

In the always-evolving electronic age, many famous personalities use trademark law to protect the use of their names over the Internet. Trademark law, which prevents confusion between certain goods or services by indicating the source of the trademark, also allows someone to recover a domain name containing their trademark. A trademark is a word, phrase, symbol or design, or a combination of them, that identifies and distinguishes the source of a trademark. Names of people and companies, business logos and symbols, and particular sounds can all be trademarked. Everything from Julia Roberts' name, the Nike "swoosh," and the NBC chimes are registered with the US Patent and Trademark Office. Trademarks identify a product, service, person, or thing from others in the same field, and trademark infringement has, and always will be, a serious offense. What's in a Name Anyone can register a domain name for a few dollars, which has led to the abundance of "cybersquatters." Cybersquatters are people who register domain names that are identical or similar to well-known marks, and then try to sell the domain to the mark owner for an inflated sum of money.

This has been done to everyone from Julia Roberts and Bruce Springsteen to the organization PETA and the financial institution Paine Webber. To protect trademark owners from cybersquatting, Congress passed and President Clinton signed into law the Anti-Cybersquatting Consumer Protection Act in November, 1999. Under the Act, a trademark owner can sue to collect damages and recover a domain name from a person who, with a bad faith intent to profit, registered a domain name that is identical or similar to a distinctive or famous trademark. The Internet Corporation for Assigned Names and Numbers (ICANN) was also established around this time, which authorized a supervisor of domain name registrations, and adopted an on-line arbitration system for resolving domain name disputes. Proving Cybersquatter Infringement In order to have a domain name canceled or transferred to the trademark owner under law, the owner must prove that: (1) the domain name is identical or confusingly similar to the trademark (2) the registrant has no right or legitimate interest in the domain name (3) the domain name has been registered and is being used in bad faith.

Several celebrities have been successful in getting their domain names from cybersquatters under ICANN, including Nicole Kidman, Julia Roberts, and Venus and Serena Williams. Others have not been as successful, like Sting and Bruce Springsteen. However, registering a trademark to a name will provide added protection against cybersquatters trying to benefit financially from an already well-known domain name. Should I Trademark My Name? Trademark infringement existed before the Internet, but the ease of registering domain names has increased the challenges of trademark rights. Because anyone from high school students to multi-million dollar corporations can register domain names at little expense, it may be a good idea to register your name if you feel it could be threatened by a cybersquatter. This is especially true for people whose names are also their profession, like actors, car dealers, even fashion designers. Designer Ralph Lauren has had his name trademarked since 1972 for added protection. Fashion designer Donna Karan found her trademark useful when she fell victim to a dispute over her name. A man unknown to her, Richard Wilson, had registered the domain name dkny.biz.

Karan had already owned dkny.com and donnakaran.com, and filed suit with the WIPO stating Wilson registered the domain name in bad faith. The WIPO panel agreed with Karan, requiring the domain name to be transferred from Wilson to The Donna Karan Company. How to Trademark a Name Anyone whose name also identifies a business or profession should consider trademarking their actual name. If you are considering establishing a trademark for your name, you should first perform a trademark search with LegalZoom or by going to the US Patent and Trademark Office's (USPTO) website at , to determine if it is claimed as a mark by someone else. The USPTO reviews trademark applications and determines whether an applicant meets the requirements for federal registration. Even if you do not register your name you can still use a mark you have adopted to identify your goods and/or services. Anytime you claim rights to a mark, you may use the "TM" (trademark) or "SM" (service mark) symbol, regardless of whether you filed an application with the USPTO. But registering your mark will offer you added protection under trademark law, including giving you the ability to bring action in court concerning the mark and obtaining registration in foreign countries.

The mark ¨ can only be used after the mark is actually registered with the USPTO. LegalZoom can help you register a trademark for a name, logo, or slogan . Just get started by filling out an online questionnaire and we’ll perform a trademark search to find possible conflicting trademarks. When your application is finished, we will file it for you with the USPTO. Trademark Law Basics Trademark Law Basics Can I lose my trademark? What is a trademark? A trademark can be almost anything as long as it helps the consumer identify with the particular product or service. It can be a word, phrase, symbol, image, sound, device, or even color. Examples include such marks as the Nike “swoosh,” the NBC three-toned chime “G E C,” and the distinctive shape of a Coca-Cola bottle. What is the purpose of trademark law? The purpose of trademark law is twofold: first, it is to aid the consumer in differentiating among competing products and second, it is to protect the producer's investment in reputation. The U.S. Supreme Court summed up this purpose nicely in 1995 in the case of Qualitex Co. v.

Jacobson Products Co.: "[T]rademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the customer's cost's of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that … the item with this mark … is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation related rewards associated with a desirable product." What do trademarks protect? The heart of trademark protection revolves around protecting consumers from being mislead. Imparting source and producer identifying cues, a trademark provides the consumer with the means to make judgments concerning the goods before sampling them. For example, when a consumer sees a Mercedes-Benz automobile, the trademark name "Mercedes-Benz" conveys a level of quality regarding the automobile. What type of protection is given to trademarks? Trademark protection is not one size fits all but instead the protection is distributed across a scale of four levels with level four receiving the highest protection. The degree of protection is generally correlated to the degree of distinctiveness.

Generic – generic or common descriptions receive no protection under the law of trademarks. Descriptive – descriptive terms, because they are not inherently distinctive, are not generally given trademark protection unless a secondary meaning due to the public association of the mark with the holder's product or service can be proven. Such secondary meanings can be found when a significant number of consumers and other companies associate the mark with the specific product or service. Suggestive – suggestive terms automatically receive protection even when there is no secondary meaning if the term implies something without actually describing it. Arbitrary or fanciful – arbitrary and fanciful terms are closely related in that they both are inherently distinctive and receive the highest degree of protection. Arbitrary marks have real words that are meaningless with respect to the product or service while fanciful marks are completely made up words. How are trademark rights earned? The key word in this question is “earned.” Trademarks are not born; rather, they must be earned. By using a mark in connection with a good or service, the user acquires some trademark rights. Interestingly, though trademarks are protected under both state and federal law, you do not have to register a trademark in order to have it protected (there are advantages to doing so which will be discussed below).

How do I decide upon a trademark? There are basically two steps in deciding upon a trademark. The first involves finding a mark that you want the public to see and identify with your product and that is inherently distinctive. As noted above, inherently distinctive marks are given automatic trademark protection. The second step is to conduct a trademark search to be sure that you are the first to use the mark. What is trademark searching? While the first step in deciding upon a trademark is finding terms which are inherently distinctive, conducting a trademark search is an essential second step that must be performed before deciding on a mark for a good or service. The searcher looks for marks which are either the same mark or a confusingly similar mark. The confusingly similar standard is a legal standard and a trademark attorney can help to decode such results of the search. The search for other existing marks is so important because marks are granted on a first come basis. Further, if you do not conduct an adequate search, you run the risk of infringing on another’s trademark! In addition to defending an unnecessary lawsuit, you may be required to change your mark, destroy your inventory, or pay significant licensing fees.

Ideally a complete trademark search will be conducted by a professional organization that will search state and federal trademark applications and registrations as well as other non-registered resources like business directories, company names, and internet domain names. However, it is possible to winnow a list of potential marks by conducting a simple internet or trade directory search. Why should I register my trademark? In order to receive trademark protection, a trademark holder is not required to register. However, registration of the mark with the USPTO does afford a number of advantages. Such advantages include: the exclusive nationwide ownership of the mark; the refusal by the Trademark Office to register close variations of the mark used in connection with similar goods or services by others; the right to use the symbol ® to denote the registered status; the right to have the mark become "incontestable" after five years of continuous use from the date of registration; and the act of putting other later users on notice by way of the public registration. In so doing, the mark will be presumed by law to be known by everyone, rendering the "good faith" use defense unavailable. Can I register if I am not yet ready to use the mark? The short answer is yes.

You can file an "intent-to-use" application if you have chosen a mark but are not yet prepared to put it to use. An intent-to-use application is granted for six months and will temporarily grant you the benefits of trademark ownership. How long does registration last? Federal trademark registration lasts for ten years but unlike patents, can be renewed periodically to provide indefinite protection into the future. Of course, you can also lose the rights to a mark as is discussed below. Do I need to register my trademark internationally? You should register your trademark in every country in which you anticipate a need for protection. Importantly, there are differences between US trademark law and that of many foreign countries. In the US , we grant trademark protection to the first person to use the inherently distinctive mark. However, in all other countries, the first person to apply for registration of a mark is granted the trademark. What is Trademark Infringement? A potential for trademark infringement exist when the holder of one trademark claims that another is using a confusingly similar mark. To bring a successful claim, the holder must prove in court that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake, and/or deception with the consuming public.

In deciding on whether the infringing mark creates confusion for the consuming public, courts often look at the following factors: the similarity in the overall impression created by the two marks; the similarities of the goods and services involved; the strength of the plaintiff's mark; any evidence of actual confusion by consumers; the intent of the defendant in adopting its mark; the physical proximity of the goods in the retail marketplace; the degree of care likely to be exercised by the consumer; and the likelihood of expansion of the product lines. In every trademark infringement action, courts will always look at the first five of these factors while the last three factors are the most common additional factors considered. If a trademark holder wins a trademark infringement suit, the most common remedy is injunction against further infringement. However, attorney’s fees are available if the mark is federally registered and monetary damages are available under the Lanham act but are rarely awarded. What is Trademark Dilution? Trademark dilution refers to the weakening of a mark through unauthorized use. Congress responded to trademark dilution by creating a federal trademark dilution statute under 15 U.S.C. 1125(c).

Trademark dilution under this statute differs from trademark infringement in that the dilution statute only applies to “famous” marks and that the dilution statute requires neither likelihood of confusion, nor competition between the parties. Indeed, the trademark dilution statute even includes satires and parodies in commercials or advertisements when there is no likelihood of confusion. Can I lose my trademark? Loss through usage: Once you have a trademark, your rights are unfortunately not necessarily static. The rights to the mark remain pegged to the degree of distinctiveness at a given time. This is to say that though at one time a mark may have been inherently distinct, over time, it can lose its distinctive nature and become merely generic. These events occur due to misuse of the mark over time. For example, at one time aspirin, cellophane, and elevator were all trademarks afforded protection under federal laws. However, over time due to improper use, the marks slipped into the public domain. In this way, it is important to think of trademarks as adjectives and not has nouns. When a trademark holder uses his mark, it should be along with a generic term.

He should ask for a Xerox photocopy not a Xerox or for a pair of Nike shoes not for a pair of Nikes. Thus, it is essential to monitor and indeed police the use of your mark within your own organization but especially within the public. This may require you to educate the public as to the mark’s proper uses but may also require you to initiate legal action. Loss through non-usage: The USPTO has a policy that favors trademark use. If you fail to use the mark in business for two or more years, you may be presumed to have abandoned your mark and thus lose ownership and its benefits.

Question: What is the trademarked name for the distinctive logo used Nike?
Answer: Swoosh